Inter Partes Review of U.S. Patent No. RE40,264
`IPR2017-00281
`
`
`By: Christopher Frerking (chris@ntknet.com)
`
`Reg. No. 42,557
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`INTEL CORPORATION, GLOBALFOUNDRIES U.S., INC.,
`
`MICRON TECHNOLOGY, INC., AND
`
`SAMSUNG ELECTRONICS COMPANY, LTD.,
`
`
`
`
`
`
`
`Petitioners
`
`v.
`
`DANIEL L. FLAMM,
`
`Patent Owner
`
`CASE IPR2017-002811
`U.S. Patent No. RE40,264 E
`
`PATENT OWNER’S RESPONSE
`UNDER 37 C.F.R. § 42.107
`Claims 37-50 & 67
`
`
`
`Mail Stop: PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`1 Samsung Electronics Company, Ltd. Was joined as a party to this proceeding via
`a Motion for Joinder in IPR2017-01751.
`
`
`
`i
`
`
`IPR2017-00281
`
`
`By: Christopher Frerking (chris@ntknet.com)
`
`Reg. No. 42,557
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`INTEL CORPORATION, GLOBALFOUNDRIES U.S., INC.,
`
`MICRON TECHNOLOGY, INC., AND
`
`SAMSUNG ELECTRONICS COMPANY, LTD.,
`
`
`
`
`
`
`
`Petitioners
`
`v.
`
`DANIEL L. FLAMM,
`
`Patent Owner
`
`CASE IPR2017-002811
`U.S. Patent No. RE40,264 E
`
`PATENT OWNER’S RESPONSE
`UNDER 37 C.F.R. § 42.107
`Claims 37-50 & 67
`
`
`
`Mail Stop: PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`1 Samsung Electronics Company, Ltd. Was joined as a party to this proceeding via
`a Motion for Joinder in IPR2017-01751.
`
`
`
`i
`
`
`
`Inter Partes Review of U.S. Patent No. RE40,264
`IPR2017-00281
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`
`TABLE OF CONTENTS
`
`Page(s)
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`TABLE OF CONTENTS ...................................................................................... i
`TABLE OF AUTHORITIES ................................................................................ ii
`I.
`Introduction ........................................................................................... 1
`
`II. Overview of the ‘264 Patent .................................................................. 1
`
`III. The Prior Art .......................................................................................... 3
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`A. Kadomura .................................................................................... 3
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`B. Matsumura ................................................................................... 3
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`IV. Kadomura and Matsumura Do Not Render Claims 37 Obvious ........... 6
`
`Petitioners’ Fail to Articulate any Benefit from Combining Matsumura
`with Kadomura ...................................................................................... 7
`
`V.
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`VI. Petitioners’ Fail to Articulate any Motivation for Combining Matsumura
`with Kadomura ...................................................................................... 10
`
`
`VII. Petitioners Have Failed to Prove Obviousness ...................................... 13
`
`VIII. Some Further Observations on Kadomura and Matsumura .................. 15
`
`IX. Ground 4 Kikuchi and Matsumura Do Not Render Claims 27 and 51
`Obvious .................................................................................................. 16
`
`1. Neither Kikuchi nor Matsumura teaches claim element
`27[a]
` ......................................................................................................
`17
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`2. The Petition does not specify any prior art for claim element
`27
`[e]
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`ii
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`Inter Partes Review of U.S. Patent No. RE40,264
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`17
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`3. The PTAB must make a finding of a motivation to combine
`when it is
`disputed.
` ......................................................................................................
`19
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`4. None of the defects in the Petition can be cured by Petitioners’
`Reply
` ......................................................................................................
`20
`
`X. Ground 6: Moslehi, Matsumura and Oka Do Not Render Claim 37
`Obvious .................................................................................................. 21
`XI. The Dependent Claims are Not Invalid ................................................. 22
`
`XII. Conclusion ............................................................................................. 23
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`iii
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`Inter Partes Review of U.S. Patent No. RE40,264
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`TABLE OF AUTHORITIES
`Cases Page(s)
`
`Hartness Int’l Inc. v. Simplimatic Eng. Co.,
`819 F.2d 1100 (Fed. Cir. 1987)......................................................................... 23
`
`In re Fine 837 F.2d 1071 (Fed. Cir. 1988) ........................................................ 24
`
`In Re: Nuvasive, Inc., 842 F.3d 1376 (Fed. Cir. 2016) ............................... 12, 13
`
`Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359
`(Fed.Cir.2016) ..................................................................... 14, 15, 19, 22, 20, 21
`
`Kimberly Clark Corp. v. Johnson & Johnson,
`745 F.2d 1437 (Fed. Cir. 1984)......................................................................... 23
`
`KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398 (2007) ............................ 13, 15, 22
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756,
`48,767 (Aug. 14, 2012) ..................................................................................... 21
`
`Statutes Page(s)
`
`37 C.F.R. § 42.104(b)(4) ................................................................................... 19
`
`37 C.F.R. § 42.107 .............................................................................................. 1
`
`MPEP § 2143.03 ............................................................................................... 23
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`iv
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`Inter Partes Review of U.S. Patent No. RE40,264
`IPR2017-00281
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`COMES NOW Patent Owner, Daniel L. Flamm, Sc.D., the sole inventor and
`
`owner of the U.S. Patent No. RE40,264 (“the ‘264 patent”), through his counsel,
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`submits this response pursuant to 37 C.F.R. § 42.107 and asks that the Patent Trial
`
`and Appeals Board confirm the patentability of independent claims 37 and all its
`
`dependent claims.
`
`I.
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`Introduction
`
`This response addresses the independent claim, 37 and its dependent claims
`
`that are the subject of the institution Order. The Board ruled that these claims would
`
`have been obvious by combining Matsumura and Kadomura (Decision p. 22), and
`
`by combining Kikuchi with Matsumura (Id. p. 32).
`
`The obviousness issue revolves around the claim limitation, changing the
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`temperature “within a preselected time interval,” specifically:
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`the substrate temperature control circuit is operable to change the
`substrate temperature from the selected first substrate temperature
`to the selected second substrate temperature within a preselected
`time period to process the film.
`
`(Claim 37 Ex. 1001 at 22:22-28.)
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`
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`II. Overview of the ‘264 Patent
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`The ‘264 patent describes methods of fabricating semiconductors, preferably
`
`using a plasma discharge. Multiple substrate temperatures are employed in a
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`continuous process for etching films, where temperature changing is achieved within
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`a preselected time period. (Flamm Dec. Ex. 2001,¶8)
`
`One of the problems that was overcome by the invention is described at
`2:17- 25 (Ex. 1001) of the patent:
`
`“In general, implantation of ions into a resist masking surface
`causes the upper surface of said resist to become extremely cross-
`linked and contaminated by materials from the ion bombardment.
`If the cross-linked layer is exposed to excessive temperature, it is
`prone to rupture and forms contaminative particulate matter.
`Hence, the entire resist layer is often processed at a low
`temperature to avoid this particle problem.”
`
`Processing at low temperatures generally results in slower processing. (Flamm
`
`Dec. Ex. 2001,¶9) “Accordingly, the present invention overcomes these
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`disadvantages of conventional processes by rapidly removing a majority of resist at
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`a higher temperature after an ion implanted layer is removed without substantial
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`particle generation at a lower temperature.” (id. at 2:26-30) The invention achieves
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`“high etch rates while simultaneously maintaining high etch selectivity...” (id. at
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`2:32-33). (Flamm Dec. Ex. 2001,¶9)
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`
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`While methods involving the use of various temperatures for manufacturing
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`semiconductors were known in the art prior to the ‘264 patent, none of the prior art
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`discloses etching or processing where the temperature of the substrate is changed
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`“within a preselected time interval for processing” (Claim 27) or “within a
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`preselected time period to process the film” (Claim 37) in the manner claimed.
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`(Flamm Dec. Ex. 2001,¶9)
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`III. The Prior Art
`
`A. Kadomura
`
`Kadomura teaches a cryogenic two-step etching treatment, wherein the etching
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`is suspended between the first and second etches. (Ex. 2001¶10). During the
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`suspension, the first etching gas is discharged and is replaced by a second etching
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`gas for the second etching step. (Ex. 2001¶10). (Ex. 1005 at 6:36-44, 8:24-32,
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`10:4-6.) One of the benefits of this approach, according to Kadomura, is that the
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`time required to discharge the first gas and replace and stabilize the second gas can
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`be sufficient to allow simultaneously changing the substrate temperature for a
`
`second etch processing step:
`
`“In this case, since the series of operations described above, that,
`[sic] is a series of operations of interrupting discharge, exhausting
`remaining gases in the diffusion chamber 2 and, further,
`introducing and stabilizing a fresh etching gas take a time equal
`with or more than the time required for rapid cooling, the time
`required for the rapid cooling does not constitute a factor of
`delaying the time required for the etching treatment of the
`specimen W.”
`(Ex. 2001 ¶10. Ex. 1005 at 6:55-62 (emphasis added); see also id. at 7:22-30, 8:43-
`50, 10:13-16)
`
`
`
`Kadomura teaches nothing about a preselected time interval for changing
`
`temperature and specifically teaches that while the temperature is being changed,
`
`no processing is performed. (Ex. 2001, ¶ 10) The maximum time interval available
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`for the temperature change in Kadomura is a function of the time it takes to
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`discharge the first gas, and then to introduce and stabilize the second gas. (Id.)
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`There would be no benefit from attempting to preselect a time period to change the
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`Kadomura temperature since there is no processing during the temperature change
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`that would be affected by the duration of the change, and foreshortening the time
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`for changing temperature would not otherwise improve the Kadomura process.
`
`(Id.)
`
`
`
`At the time of the ‘264 invention, cryogenic etching was merely a laboratory
`
`curiosity that had been impractical owing to its various requirements to use
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`ultracold fluids and gases, the difficulties in finding production worthy materials
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`that could tolerate repeated cycling between room and low temperature without
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`premature deterioration, brittle fractures, and leaks, and the relatively long times
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`required to effectuate heating, cooling, and equilibration to attain sufficiently
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`uniform and stable substrate temperatures. (id. at ¶ 10) The objects of the
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`Kadomura cryogenic etching process were to attain “high accuracy and fine
`
`fabrication simultaneously, as well as actually putting the low temperature etching
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`technique into practical use.” (id. at ¶ 10) (Ex. 1005 at 2:60-64.) By contrast, one
`
`of Dr. Flamm’s primary objectives was to increase throughput and selectivity of
`
`conventional plasma processes: “[the invention] overcomes serious disadvantages
`
`of prior art methods in which throughput and etching rate were lowered in order to
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`avoid excessive device damage to a workpiece.” (Ex. 1001 at 2:11-14) (id. at ¶ 10)
`
`Kadomura’s technique of exhausting and replacing the gas between etches and
`
`employing very cold temperature results in relatively long intervals between
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`etches, “about 30 sec,” which teaches away from the ‘264 patent (Ex. 1005 at 6:54,
`
`8:42, (id. at ¶ 10) In furtherance of increased throughput, Dr. Flamm’s ‘264 patent
`
`teaches a time interval of “several seconds” (Ex. 1001 at 19:8-12 & Fig. 10), which
`
`is at least an order of magnitude shorter than anything in Kadomura.
`
`
`
`According to Kadomura, a specific time interval for changing the
`
`temperature is of no importance, since the time interval to change the temperature
`
`is equal or less than the time interval to change the gas. (id. at ¶ 10). As Kadomura
`
`repeatedly states:
`
`“In this case, since the series of operations described above, that,
`[sic] is a series of operations of interrupting discharge, exhausting
`remaining gases in the diffusion chamber 2 and, further,
`introducing and stabilizing a fresh etching gas take a time equal
`with or more than the time required for rapid cooling, the time
`required for the rapid cooling does not constitute a factor of
`delaying the time required for the etching treatment of the
`specimen W.”
`
`(Ex. 1005 at 6:55-62; see also id. at 7:19-30 and 8:43-50, 10:13-16)
`
`
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`Accordingly, Kadomura teaches away from the concept of a
`
`preselected time period for changing the temperature in the ‘264 Patent
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`(id. at ¶ 10).
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`B. Matsumura
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`The object of Matsumura was the different processing steps and modules for
`
`laying a uniform film of photoresist onto a substrate before exposing the
`
`photoresist to light. After the resist is applied and baked, it is exposed through a
`
`pattern mask to light, thereby forming a latent image. (Ex. 2001, ¶ 11) The resist
`
`having the latent image is then processed to form a layer of patterned photoresist
`
`on the substrate. (Id.) Matsumura recognized that controlling heating and cooling
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`during the “adhesion and baking processes” when precursor liquids are applied to
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`semiconductor wafers and baked improved quality and reproducibility; Matsumura
`does not teach anything about etching2. (Ex. 1003 at 1:15-20, 4:56-59, Figs. 1 & 4,
`
`(Id., ¶ 11) Matsumura’s “resist processing system,” is depicted in the block
`
`diagram Fig. 4 as the box 40. (Ex. 1003, 4:56-59 and Fig. 4.) Specifically, it
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`comprises a “Sender,” 41, for transporting the wafer to the “Adhesion Unit,” 42,
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`which applies HMDS to the wafer to enhance the adhesion of the resist while the
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`substrate is held at a constant predetermined temperature (7:33-36), the resist is
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`applied by the “Coating unit,” 43, and then it is baked in the “Baking Unit,” 44.
`
`
`2 While Matsumura includes “etching” in the list of other possible applications for
`his invention, he teaches nothing about etching and strongly suggests that he has
`not used his invention with any type of etching, let alone plasma etching. (Ex. 1003
`at 10:3-7.)
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`(Id.) The “Receiver unit,” 45, then forwards the wafer to an “interface (not
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`shown)” which transfers the wafer to an external “exposure unit (not shown).” (Id.
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`at 5:5- 12 and Fig. 4.) The crux of Matsumura’s inventive solution for baking resist
`
`was to heat the wafer “according to a schedule contoured to the baking process by
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`means of a conductive thin film embedded in the substrate support structure in
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`accordance with the schedule information” in a stored recipe. (Id. at 3:10-11, 2:66-
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`3:16, 3:17-51, (Id.)) To improve adhesion before the resist is first applied to the
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`substrate, the wafer is heated to a single predetermined temperature and maintained
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`at that single temperature while a treatment with HDMS is performed. (Id.)
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`Matsumura teaches away from the invention of the ‘264 Patent.
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`IV. Kadomura and Matsumura Do Not Render Claim 37 Obvious
`
`The issues here revolve around the limitation in independent claim 37 that
`
`the temperature is changed “within a preselected time interval to process the film.
`
`The Petition and the Decision granting the Petition, by their silence, essentially
`
`acknowledge the fact that the Kadomura prior art (Ex. 1005) does not teach this
`
`claim element. They each rely on the Matsumura prior art’s (Ex. 1003)
`
`“predetermined recipes” for this element.
`
`The issues here are threefold:
`
`1. Would there be any benefit from combining Matsumura’s
`“predetermined recipes” with Kadomura’s method of dry etching?
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`2. Would a PHOSITA be motivated to combine Matsumura’s
`“predetermined recipes” with Kadomura’s method of dry etching?
`
`3. Have Petitioners discharged their burden of proof on obviousness?
`
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`
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`Kadomura is crystal clear in its teaching that the time interval to change the
`
`temperature is of no consequence as long as it is not longer than the time interval
`
`to change out the etching gas. In each embodiment of Kadomura’s process, the
`
`length of time to change the temperature, which was a “short period of time of
`
`about 30 seconds,” was shorter than the time to change the gas (Ex. 1005 6:52-62,
`
`7:19-30, 8:40-50, 10:11-16). Kadomura understood that since both operations
`
`need to be completed before the second etch can proceed, the only time period that
`
`matters is the longest. (Ex. 2001,¶12) He put it this way:
`
`In this case, since the series of operations described above, that, is
`a series of operations of interrupting discharge, exhausting
`remaining gases in the diffusion chamber 2 and, further,
`introducing and stabilizing a fresh etching gas take a time equal
`with or more than the time required for rapid cooling, the time
`required for the rapid cooling does not constitute a factor of
`delaying the time required for the etching treatment of the
`specimen W.
`
`(Id. 6:55-62, emphasis added, Id.¶12)
`
`The point – that the time interval between etches in Kadomura is solely a function
`
`of the time it takes to change the etching gas – is reiterated at Id. 8:43-50
`
`(emphasis added):
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`Inter Partes Review of U.S. Patent No. RE40,264
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`Accordingly, since a series of operations of exhausting remaining
`gases in the diffusion chamber 2 after the interruption of discharge
`and further introducing and stabilizing a fresh etching gas takes a
`longer time than that required for rapid cooling also in this second
`embodiment, the time required for the rapid cooling does not
`constitute a factor of delaying the time required for the etching of
`the specimen W.
`
`See also Id. 7:22-30, 10:13-16
`
`
`
`Given that the time to change the temperature is of no significance as long as
`
`it less or equal to the time to change the etching gas, and that in all of the
`
`embodiments in Kadomura the time to change the temperature was less than the
`
`time to change the gas, how would using Matsumura’s “predetermined recipes”
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`change anything in Kadomura, much less provide any benefit? The answer is
`
`plain: it would not. Kadomura’s process would not be improved at all, only a
`
`useless step would be added. (Id.¶13).
`
`
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`For the sake of thoroughness, assume someone practicing Kadomura’s
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`process found that the time interval to change the temperature were longer than the
`
`time to change the gas, would combining Matsumura’s “predetermined recipes”
`
`improve this application of Kadomura? The answer again is no. Under those
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`circumstances, given that Kadomura, along with the semiconductor industry in
`
`general, was concerned about throughput,3 the task at hand would be readily
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`3 Id. 4:54, 5:26, 7:30, 7:56, 9:20, 9:31, 10:41, 10:47.
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`apparent – attempt to reduce the time interval for the temperature change. In this
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`regard, Matsumura’s “predetermined recipes” would again be utterly useless.
`
`(Id.¶13)
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`V.
`Petitioners’ Fail to Articulate any Benefit from Combining Matsumura
`with Kadomura
`
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`Petitioners’ expert, Dr. Bravman, makes the following extraordinary
`
`statement in his declaration (Ex. 1006 ¶78, emphasis added):
`
`“A person of ordinary skill in the art at the time of the alleged
`invention would have understood that using Matsumura’s recipe
`approach would have helped achieve Kadomura’s goal of
`increased throughput and selectivity, in addition to bringing
`greater predictability to Kadomura’ etching process”
`
`Dr. Bravman does not explain how Matsumura’s “preprogramed recipes”
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`
`
`could possibly increase throughput in Kadomura. Nor does he resolve the
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`contradiction between his statement and Kadomura’s repeated teaching that “…the
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`time required for the rapid cooling does not constitute a factor of delaying the time
`
`required for the etching treatment of the specimen W.” (Ex. 1005 8:48-50, See also
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`6:60-62, 10:13-16) Petitioners, perhaps recognizing that Dr. Bravman’s throughput
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`assertion would not be helpful to his credibility, do not rely on it in their Petition.
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`
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`Petitioners’ entire discussion of the alleged benefits from combining
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`Matsumura’s “predetermined recipes” with Kadomura is found on page 30 of the
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`Petition.:
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`Adding Matsumura’s programmable CPU to Kadomura’s control
`circuit would have enabled preselecting and programming to
`ensure an exact time interval for temperature changes between
`steps.
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`No explanation is provided in either the Petition or the declaration as how this
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`“ensur[ing] an exact time interval for temperature changes” would benefit
`
`Kadomura. Again, there is a contradiction between this statement and Kadomura.
`
`Since Kadomura teaches that the time interval for temperature change is “not a
`
`factor,” certainly the “exact time interval for temperature changes” would not be a
`
`factor. Hence, it would not provide any benefit to Kadomura’s process.
`
`
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`Petitioners’ only other contention of a benefit flowing from combining
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`Matsumura’s “predetermined recipes” and Kadomura is found in this statement
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`(Petition 29):
`
`“For these reasons, it would have been obvious and desirable for a
`skilled person to use Matsumura’s predetermined recipe approach
`and programmable CPU in Kadomura’s processing tool.”
`
`The “reasons” are presumably contained in the preceding sentences in the
`
`paragraph, which all relate to the state of the art and practices of chipmakers, viz.
`
`(Petition 29):
`
`“Using predetermined recipes and programmable control circuits
`(including CPUs) in semiconductor manufacturing was well
`known and widespread before the ’264 patent. (Ex. 1006 ¶¶145,
`161) Chipmakers carefully measured and analyzed time and
`temperature data relating to their manufacturing processes. (Id.)
`Programming selected times and temperatures into tools before
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`processing allowed chipmakers to control their processes and
`make them predictable and reliable. (Id. ¶¶143, 161) Doing so also
`maximized efficiency.” (Id.)
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`(Id. ¶¶71, 130)
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`
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`Why these “reasons,” would make it “desirable for a skilled person to use
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`Matsumura’s predetermined recipe approach and programmable CPU in
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`Kadomura’s processing tool” is left unsaid. Which renders the assertion of
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`desirability totally conclusory. In Re: Nuvasive, Inc., 842 F.3d 1376, 1383 (Fed.
`
`Cir. 2016) (“’[C]onclusory statements’ alone are insufficient and, instead, the
`
`finding must be supported by a ‘reasoned explanation.’”) Also left unsaid is
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`which of these “desirable” features would arise from the use of the “predetermined
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`recipes,” which is relevant to the matter at hand (the Flamm claim element 37[f],
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`“within a preselected time period to process the film”), and which arise from the
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`use of a “programmable CPU” which is not relevant to the matter at hand.
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`
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`Moreover, the “reasons” that relate to the time interval for the temperature
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`change are not beneficial to Kadomura, as discussed above, because, as just seen,
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`they are contrary to Kadomura’s express teaching that the time interval is “not a
`
`factor.” It simply does not matter what the temperature change time interval is –
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`“about 30 seconds,” “about 50 seconds” (Ex. 1005, 6:52-55, 10:11-16) or whatever
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`– as long as it is less than or equal to the time to change out the gas. No benefit
`
`has been shown.
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`VI. Petitioners’ Fail to Articulate any Motivation for Combining
`Matsumura with Kadomura
`
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`In accessing the prior art, the PTAB ‘consider[s] whether a PHOSITA would
`
`have been motivated to combine prior art to achieve the claimed invention.’” In
`
`Re: Nuvasive, Inc., 842 F.3d 1376, 1383 (Fed. Cir. 2016) “’[C]onclusory
`
`statements’ alone are insufficient and, instead, the finding must be supported by a
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`‘reasoned explanation.’” (Id.) “Although identifying a motivation to combine ‘need
`
`not become [a] rigid and mandatory formula,’ KSR, 550 U.S. at 419, the PTAB
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`must articulate a reason why a PHOSITA would combine the prior art references.”
`
`(Id.)
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`
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`Notwithstanding the Supreme Court’s and the Federal Circuit’s admonition
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`that the PTAB, and by extension a petitioner, “must articulate a reason why a
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`PHOSITA would combine the prior art references,” Petitioners devote but one
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`conclusory sentence to the task; a sentence that the board relied on in granting the
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`petition (Decision 19). It is (Petition 33-34, emphasis added):
`
`“A skilled person would have been motivated to obtain the
`benefits of the predetermined recipes described in Matsumura,
`including increased accuracy in temperature control and greater
`process control and reliability.”
`
`
`Three alleged motivators.
`
`
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`The first, “increased accuracy in temperature control,” is a bare conclusion.
`
`There is no evidence that using Matsumura’s “predetermined recipes” would
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`increase Kadomura’s accuracy in temperature control. Nor is there an explanation
`
`of how or why using those recipes would increase Kadomura’s accuracy in
`
`temperature control. This absence of evidence or explanation is especially
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`problematic in the light of the fact that one of Kadomura’s objects was to attain
`
`“finer temperature control.” (Ex. 1005 4:25, see 4:17-29, 5:27-41.) Indeed, the
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`very title of Kadomura’s patent is METHOD AND APPARATUS FOR DRY
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`ETCHING AND TEMPERATURE CONTROL. According to Kadomura, in the
`
`first embodiment, “…the specimen temperature is controlled finely by the cooling
`
`control of a control device 23.” (Ex. 1005 6:33-35, emphasis added.) Similarly, in
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`the second embodiment: “…the specimen temperature is finely controlled by
`
`cooling control by the control device 23 described above.” (Id. 8:21-23 emphasis
`
`added.) In the third and final embodiment, Kadomura states: “The specimen
`
`temperature is controlled in this embodiment in the same manner as that in the
`
`second step of the first and the second embodiment.” (Id. 10:4-6)
`
`
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`Petitioners leave us in the dark as to how Matsumura’s “predetermined
`
`recipes” would improve on this.
`
`
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`The other two alleged motivators, “greater process control and reliability,”
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`are also conclusory statements, unsupported by any explanation or articulated
`
`reasoning. In Re: Nuvasive, Inc., 842 F3d at 1383. These contentions fail for
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`another reason. Petitioners rely on a paragraph from Matsumura, Ex. 1003, 10:22-
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`29. But the passage makes clear that these alleged motivating factors do not arise
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`from using Matsumura’s “predetermined recipes,” rather, as Matsumura explicitly
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`states, they arise from using his “thermal history curves.” (Id.)
`
`
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`No motivation has been shown.
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`VII. Petitioners Have Failed to Prove Obviousness
`
`Here, benefit and motivation are two sides of the same coin. Since there
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`would be no benefit from combining Matsumura’s “predetermined recipes” with
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`Kadomura, it is not likely that the hypothetic person, the PHOSITA, would be
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`motivated to make such a combination.
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`The law is clear that unless motivation to combine is established, a patent
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`cannot be invalidated. The Federal Circuit following on from the Supreme Court
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`and a host of earlier precedents, made the requirement explicit (In Re: Nuvasive,
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`Inc., 842 F.3d at 1383):
`
`Our precedent dictates that the PTAB must make a finding of a
`motivation to combine when it is disputed. See, e.g., Lee, 277
`F.3d at 1343–45; see also KSR, 550 U.S. at 418 (stating that the
`PTAB’s motivation to combine “analysis should be made explicit”
`(citation omitted)). Although identifying a motivation to combine
`“need not become [a] rigid and mandatory formula,” KSR, 550
`U.S. at 419, the PTAB must articulate a reason why a PHOSITA
`would combine the prior art references.
`
`Petitioners, who have the burden of proof, strain to articulate a motivation,
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`
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`but fail as they must because Respondent, who has no burden of proof, has
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`established, through the explicit teaching of Kadomura, the absence of a
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`motivation to combine Matsumura’s “predetermined recipes” with Kadomura.
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`VIII. Some Further Observations on Kadomura and Matsumura
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`At most, even pushing aside all of the above arguments, the only thing in
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`Matsumura that is not mentioned by Kadomura is using a computer or
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`microcontroller to effectuate a process. xx Kadomura does not expressly state that
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`his sequence of steps were or could be effectuated by a digital controller. (Ex.
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`2001,¶14) Accordingly it is unknown whether each or some of the process steps
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`and settings described by Kadomura were performed by a microcontroller using
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`instructions or data comprising a recipe stored in tangible media.(Id.,¶14)
`
`
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`That question is irrelevant since digital process control in the field of
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`semiconductor processing was common knowledge long before the Kadomura
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`priority dates. (Id.,¶14) Whether the claims of the ‘264 are obvious or not has
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`nothing to do with whether Kadomura, or for that matter any other reference, used
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`a digital computer, CPU, microprocessor, or the like to sequence various process
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`steps based on data in memory (e.g. without human interaction).
`
`(Id.,¶14) Petitioner’s repeated “argument” throughout its petition that a PHOSITA
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`would have looked to Matsumura for using a CPU and a recipe to improve control
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`of temperature etc. amount to no more than a vacuous incantation that process
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`steps can be automated using a digital microcontroller, or the like. (Id.,¶14) No
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`PHOSITA would have considered Matsumura for this at least since this type of
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`automation was common knowledge at the time and its implementation in
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`production worthy processing equipment was pervasive and obvious.
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`(Id.,¶14). Accordingly, this is no argument to combine. (Id.,¶14) As for the rest,
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`Matsumura is in a different field of art, and even if that fact is ignored,
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`Matsumura’s recipes would have been useless for performing any plasma
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`etching. (Id.,¶14) The fundamental questions only depend on the processes
`
`disclosed, whether the various equipment disclosed in the prior art cited was
`
`operable to perform those processes, and whether any of Petitioner’s specific
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`proposals for a combination (e.g. a combination that is definite, operable, and
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`logically understandable in detail) would have been obvious without 20/20
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`hindsight garnered from the specification and claims of the ‘264.(Id.,¶14)
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`IX. Ground 4 Kikuchi and Matsumura Do Not Render Claim 37 Obvious
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`In this ground, petitioners combine a patent on ashing (Kikuchi) with a
`
`patent on adhesion and baking (Matsumura) to argue that claims on etching would
`
`have been obvious.
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`Petitioners’ contention that independent claims 37 is obvious by combining
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`Kikuchi and Matsumura fails for four reasons:
`
`1.
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`Neither Kikuchi nor Matsumura teaches claim element 37[a]and [b],
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`which call, inter alia, for placing a substrate on a substrate holder within a
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`plasma discharge apparatus with a temperature sensor and temperature control
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`system to adjust a first predetermined substrate temperature and similarly for a
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`second predetermined temperature i.e.,
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`37[a]: “placing a substrate having a film thereon on a substrate
`holder within
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